7 Things to Know About International Trademark Applications

Nadaline Webster,

The international trademark landscape across a vast quantity of systems, languages, laws and cultures can be somewhat intimidating to consider navigating.

Fortunately, a number of treaties and systems are in place to help you streamline your international trademark application and leverage the most value from your intellectual property in many of the countries in which you do business.

When used appropriately, these systems can be a HUGE time and cost-saver for companies who wish to file in more than one jurisdiction.

1. There are 3 key agreements that relate to international trademarks

The oldest of these dates back more than 130 years. The Paris Convention of 1883 is the oldest and largest of these. There are currently 177 member states and this convention first provided the ability to claim an earlier filing date as a 'priority right', once it is filed within 6 months of your earlier filing in another member country.

The Madrid Agreement of 1891 has 55 member countries and along with the Madrid Protocol makes up the 'Madrid System' for the registration of international trademarks. The Madrid Protocol of 1989 has 98 parties.The World Intellectual Property Office (WIPO) is the portal for the administration of policies regarding and processing of international applications.

The Madrid Protocol and Agreement are parallel systems - where a country is a signatory to both the protocol will take precedence.

2. There is no such thing as an "internationally effective" trademark.

While the Madrid System certainly provides convenient access to a large number of regions in which you can enjoy protection, there is no system that can provide you with a truly international trademark.

WIPO will formally examine your trademark application, however, each contracting party (country) in which you apply to register will have the opportunity to examine the application under their system. You may still end up dealing with a number of contracting offices in different countries.

3. You don't file an application directly through WIPO

If you are applying from a country which is a party to the  Madrid Agreement only, that application must be submitted through your national office and be based on a finalised registration. An application will not do. The mark being applied for must be identical in terms of both the mark itself and the goods and services applied for. While you can prepare a paper application to be submitted, handwritten forms will not be accepted!

For applications under the Madrid Protocol, a domestic application rather than a finalised registration is sufficient. The application must be certified by Office of Origin. The national offices will examine the application and have up to 18 months to accept or refuse the mark.

There are different forms depending on your country designation so care must be taken to ensure you have the correct form!

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4. Your international trademark is dependent on your domestic registration for the first 5 years

While a great deal of debate has taken place in recent years on this topic, currently, protection for your international trademark registration will be dependent on your domestic registration in the Office of Origin.

Should anything untoward occur with your home registration in the first 5 years of your international registration, it will be impacted too. If another company can find a valid reason to do so and apply to have your home registration cancelled within the dependency period, you could lose your international registrations too. This process is known as a 'central attack'.

 5. You can add more countries later

Once you hold an international registration, you may designate additional "contracting parties" in a subsequent designation. What is a subsequent designation?

It's a request made by you the holder for an extension of protection of your original international registration. Such requests for amendments can be made directly to the World Intellectual Property Office through their Subsequent Designation system.

6. Registration and usage terms are generous.

  • An international registration lasts for 10 years from the date of registration.
  • You are permitted up to 5 years before proof of use may be required where such use is not a requirement of registration in any contracting regions.
  • It may be renewed for additional 10-year periods for a renewal fee.

7. The filing process is relatively straightforward.

The application process is completed through your home Trademark Office (the Office of Origin) who will certify your application. You can file either through an electronic system (if available in your country) or with a paper application.

NOTE: You can find the official list of requirements here.

Want to know more about international trademark registrations? To celebrate World IP Day, TrademarkNow, in conjunction with Dr. Holger Gauss, Attorney and Partner at Grünecker, are hosting a FREE 'World Intellectual Property Organisation (WIPO) Registration Masterclass.'

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